Appeal No. 94-1695
Application 07/742,088
of the examiner’s position, we do not find that the examiner has properly established that
the specification is nonenabling
We reverse the rejection under 35 U.S.C. § 112, first paragraph, enablement.
Other Issues
The examiner has raised in a backhanded manner a question as to whether the
claims on appeal comply with a definiteness requirement of 35 U.S.C. § 112, second
paragraph. See, e.g., page 5 of the Examiner’s Answer ( “[I]f appellants wish to claim
‘heat-stable DNA polymerase’ by inference, guidance directed to the metes and bounds of
‘heat-stable’ is also required.”) See also the paragraph bridging pages 1-2 of the
Supplement Examiner’s Answer (“[V]agueness and indefiniteness are added thereby due
to a lack of definition of the metes and bounds of ‘heat-stable’ other than summarizing the
heat stability of Taq DNA polymerase.”) Despite raising these questions in the Examiner’s
Answer and Supplemental Examiner’s Answer, the examiner has not seen fit to reject the
claims under 35 U.S.C. § 112, second paragraph. Upon return of the application, the
examiner should clarify the matter by determining whether the claims pending in this
application meet the requirements of 35 U.S.C. § 112, second paragraph. If the examiner
determines that the claims are indefinite, an appropriate rejection using the proper legal
standards should be made. If the examiner determines that the claims are in compliance
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